Under the EDNC Patent Rules, as well as similar local patent rules across the country, parties must exchange infringement, non-infringement, and invalidity contentions during the initial phases of the case — often before the parties have a clear understanding of all the issues in the case and before a claim construction hearing.

In a recent ruling in Veolia Water Solutions & Technologies Support v. Siemens, Judge Flanagan of the EDNC suggests that you’re stuck with your initial contentions unless you can make some threshold showings that rise to the level of good cause – simply coming up with a new or better contention down the road, even if the opposing party isn’t prejudiced, may not get you very far. 

In the EDNC, parties may amend their contentions without leave of court either (i) shortly after the court has issued its final claim construction order (Rule 303.6), or (ii) within 30 days of “the discovery of new information” relevant to the parties’ contentions (Rule 303.7).  Otherwise, there must be a showing of good cause.

In Veolia, no claim construction hearing had yet occurred.  The parties were sparring about amendments to the defendants’ non-infringement and invalidity contentions under the “discovery of new information” prong in Rule 303.7.  The plaintiff moved to strike the amendments, claiming the contentions were not based on “new” information. 

The Court first noted that this is a relatively novel issue:  neither she nor the parties had found “any cases applying Local Civil Rule 303.7, nor any other local patent rules that permit amendments as of right, without leave of court, within thirty days of discovery of new relevant information.”

She then discussed what would constitute “good cause” for an amendment, and relied on the Federal Circuit’s 2006 decision in O2 Micro Int’l v. Monolithic Power Sys., stating that the amending party must show both diligence in amending its contentions after discovery of new information and a lack of prejudice to the party opposing the amendment.

As to the amendments to defendants’ non-infringement contentions,

• Judge Flanagan noted that the amendments were prompted by testimony from two of plaintiff’s experts who described the operation of the patents in question “in a way not disclosed by the patents themselves.”  She agreed that this was new information in which the claims at issue could be interpreted and entitled defendants to amend their non-infringement contentions.
• She rejected a number of arguments that plaintiff raised to the amendments – and specifically noted that defendants had acted diligently in serving amendments within 5 days after one expert’s deposition, and 25 days after the other deposition.
• She noted that since defendants had acted diligently under Rule 303.7, she did not need to reach the issue of “good cause” to further support her decision – although the Court still proceeded to discuss the “diligence and good cause” prongs anyway.

As to amendment of the invalidity contentions,

• To the extent the amendments were based on new claims asserted in plaintiff’s previously amended infringement contentions, the amendments were allowed.
• Defendants’ amendments were stricken as to “additional citations” in prior art items that defendants had previously disclosed – and which could not be shown to be based on new information.  The Court found defendants could have added those citations in its original invalidity contentions, and were unable to set forth a justification for not having done so.
• Since the defendants had failed to demonstrate diligence as to these “additional citations,” there was no need for the Court to address whether the plaintiff was prejudiced by the amendments.

One takeaway from this ruling?

Absent new information or a claim construction ruling, you’re likely stuck with your initial contentions, even if your opposing party isn’t prejudiced by the amendments.